Invention/utility model patent applications are filed with the Russian Patent and Trademark Office – the Federal Service for Intellectual Property (Rospatent).
Most of the patent filings received by the RUPTO from foreign applicants are national phases of PCT applications or national applications claiming conventional priority from applications filed in foreign countries. In case the invention was made in Russia, it is required that the first application be filed with Rospatent. (Please refer to the First Filing Requirement/Foreign Filing License section below.)
Sojuzpatent processes patent filings electronically, which ensures a 30% discount off the official fees.
For invention/utility model patent applications, the Russian PTO performs both formal and substantive examinations. For invention patent applications, a separate examination request should be filed no later than 3 years from the filing date (for PCT national stages - from the international filing date). The substantive examination for utility model patent applications is started automatically after the formal examination has been completed.
Most of our patent attorneys have prior experience working as examiners in Rospatent, and their extensive technical knowledge is combined with a deep understanding of the Patent Office’s approaches and requirements.
First Filing Requirement (Foreign Filing License) in Russia
The term “foreign filing license” is not directly mentioned in Russian IP legislation. At the same time, Russian regulations contain provisions similar to those set forth in countries that oblige national applicants to receive special permission before filing patent applications abroad.
In case the invention has been developed in the Russian Federation, the applicant is required by Russian law to file their first application in Russia (direct national filing or international application filed with the RUPTO as the International receiving office).
Any subsequent application can only be filed abroad after a six-month check performed by the Russian Patent Office. The check is meant to reveal state secrets the invention may eventually contain. Rospatent does not issue any special permission to file foreign applications (as compared to the US foreign filing license, when PTO issues a corresponding notification). The lapse of the said six-month term automatically allows the applicant to file subsequent applications with foreign Patent offices. The term may be reduced by filing a request explaining that the application materials do not contain state secrets. Reduction of the term lies then within Rospatent’s discretion. It may normally be reduced to 3-4 months.
If, in breach of said rule, the applicant files the patent application with a foreign Patent office, Russian law stipulates administrative liability (monetary penalties). At the same time, if, after an unauthorized foreign filing, a state secret is revealed in the invention, both the applicant and the inventor become criminally liable.
We will be happy to provide more information and perform an analysis of a specific situation involving the first filing requirement.
For most disputes related to patent invalidation/trademark cancellation, the venue is determined directly by Russian law. It is either the Federal executive authority in the sphere of intellectual property (Rospatent, the Chamber for Patent Disputes) or the Court for Intellectual Property Rights. For the remaining invalidation/cancellation actions (a few rare types of cases) the venue is defined according to general rules depending on the defendant's address.
At the same time, in infringement lawsuits, forum shopping is possible when the claimant can name multiple persons as co-defendants (e.g. manufacturer/importer, wholesalers, and retailers). In such cases, the claimant has the option to choose with which territorial court to file their action.
Unlike Russian or Eurasian patent rules (under which a divisional application can be filed before the patent registration or before the lapse of the period allowed for challenging the refusal decision), Ukrainian legislation allows filing a divisional application only before the decision on the initial application is issued (decision of grant or refusal). This limitation is often a stumbling point for applicants familiar with Russian and Eurasian patent regulations.
It is mandatory according to Russian legislation that foreign applicants be represented before Rospatent (RUPTO) by a Russian patent attorney who is listed in the Russian Register of Patent Attorneys.
Similarly, for prosecution of a Eurasian patent application, applicants having no residence or principal place of business in the territory of any State party to the Eurasian Convention are required to be represented by a registered Eurasian patent attorney.
To be successfully guided through the intricacies of national and regional regulation and to ensure the widest possible scope of protection, it is important for the applicant to retain an experienced patent attorney skilled in the specific technical field.
Under Georgian patent regulation, it is mandatory to request a substantive examination. As soon as the formal examination is completed, the applicant receives a notification. The request for a substantive examination should be filed within two months after receiving the notification.
In both Russian and Eurasian Patent Offices, the processing of a PCT national (regional) stage application may start before the expiration of the 31-month time limit in case the applicant makes an express request to the Patent Office.
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